Sound mark: In a rare decision concerning a sound mark, the EU General Court upheld the EUIPO's rejection of an application to register the "sound of opening a can, of a silence of about one second and the sound of a crackling of bubbles of about nine seconds" in Case T‑668/19. The application was for various goods related to beverages in classes 6, 29, 30, 32 and 33. The Court found that the EUTM application was devoid of distinctive character: "the silence after the sound of opening a can and the length of the fizzing sound, of around nine seconds, are not strong enough to be distinguished from comparable sounds in the field of beverages."
Shape of lipstick: Reversing the EUIPO Board of Appeal, the Court found the shape of Guerlain’s Rouge G lipstick was registrable as an EUTM as it was uncommon for the products, and different from any other shape existing on the market. In Case T-488/20, the Court said the aesthetic impact of a mark may be taken into account to establish a difference in relation to the norm and customs of a sector: the question is whether the product is capable of generating an objective and uncommon visual effect in the eyes of the relevant public.
It added that the norms and customs of the sector comprise all the shapes which the customer is accustomed to seeing on the market: "the fact that a sector is characterised by a wide variety of product shapes does not mean that any new shape will necessarily be perceived as one of them." In this case: "the relevant public with a level of attention ranging from medium to high will be surprised by this easily memorized shape and will perceive it as significantly deviating from the norm and habits of the lipstick sector capable of indicate the origin of the products concerned."
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Likelihood of confusion: The Court upheld a finding of likelihood of confusion between the two signs illustrated for identical/similar goods in classes 18 and 25 (Case T‑399/20). The Board correctly found "that the signs at issue are visually similar to a high degree. In addition, it found that the distinctive character of the earlier mark is low and that, in view of the specific marketing conditions in respect of the goods at issue and the importance of the visual aspect of those goods for the relevant public, the visual similarity carries greater weight in the perception of the relevant public."
Genuine use: In a case concerning genuine use of the mark pictured, the Court upheld a finding that there was no use in a form differing in elements which do not alter the distinctive character of the mark. Its reasoning included the finding that "use of the elements 'rich' and 'richmond' together but on different parts of the goods in question cannot constitute genuine use of the contested mark which does not alter its distinctive character" (Case T‑297/20).
Invalidity challenge rejected: A figurative EUTM for BODYSECRETS (pictured) was upheld as distinctive, non-descriptive and not customary in an appeal arising from an invalidity challenge (Case T-810/19). The Court said the applicant for invalidity had not demonstrated that the expression "body secrets" had been used as a laudatory or promotional marketing term, or had become customary, at the time the mark was applied for (April 2015).
Descriptive sign: In Case T-464/20, the Court ruled that the illustrated EUTM application was correctly refused as being descriptive for goods in classes 5, 29, 30 and 32. It concluded that "overall, the graphic elements of the mark applied for did not change the purely descriptive meaning of the word element 'your daily protein'."
Technical and functional role: Finally, the Court upheld a finding that a 3D EUTM application for "Brushes; brush-making materials; toothpicks; combs; toothbrushes; interdental brushes for cleaning teeth" in class 21 was devoid of distinctive character in Case T-624/19.
The Board had considered in detail earlier similar products and the Court said it was right to find that the four aspects of the mark applied for fulfil "a technical and functional role" and the shape as a whole "would be a minor variant of common forms, the components of which would all have a purely functional or decorative role".
Issue 127
Delegates at this year's MARQUES Annual Conference can benefit from 16 hours of educational opportunities in the sessions being held from 13 to 24 September
EUIPO has published a Celebratory Report marking the 10th anniversary of the EU Intellectual Property Network (EUIPN)
Madrid international applications fell by 0.6% to 63,800 in 2020, according to WIPO's Madrid Yearly Review, published earlier this month
In a video message posted on 19 July, EUIPO Executive Director Christian Archambeau said the Office received 100,000 EUTM applications in the first six months of 2021
On 1 July the Industrial Property Registrations Directorate (IPRD) of the Maltese Commerce Department installed an IP Register in Blockchain node and transferred 60,000 records to TMview and DesignView through a blockchain network
WIPO has released a new version of the WIPO IP Portal, which provides access to its full range of IP services, including the registration of trade marks, designs and GIs
Keep up to date with news about all the latest decisions, events and IP Office developments – as well as updates on the Annual Conference – on the MARQUES blogs and social media